The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc., United States of America (“United States), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is 李厚昌 (lihouchang), China, self-represented. 2. The Domain Names and Registrar
The disputed domain names The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 7 and 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 8 and 13, 2020, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 18, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed the first amended Complaint on May 20, 2020. In response to a notification by the Center regarding the Registrar’s information, the Complainants filed the second amended Complaint on May 22, 2020. On May 18, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 20, 2020, the Complainants confirmed their request that English be the language of the proceeding, while it also provided a Chinese translation of the amended Complaints. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint in English together with the amended Complaints in English and Chinese satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Chinese, of the Complaint, and the proceedings commenced on May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Response was filed in Chinese with the Center on May 30, 2020. On June 1, 2020, the Center received an unsolicited supplemental filing in English and Chinese from the Complainants. On June 4, 2020, the Center acknowledged receipt of the Complainants’ supplement filing and requested the Respondent to confirm the Response of May 30, 2020 might be regarded as his complete Response noting the Response due date was June 17, 2020. The Respondent did not send any further email communications. The Center appointed Sok Ling MOI as the sole panelist in this matter on June 30, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainants are in the business of producing, selling and licensing men’s and women’s apparel, fragrances, accessories and footwear. The Complainants have used the CALVIN KLEIN trade mark continuously since at least 1968 in connection with its products in the United States and elsewhere. The Complainants’ Calvin Klein products are sold exclusively through the Complainants’ own retail stores, outlet stores and website, as well as through authorized dealers. The Complainants advertises its CALVIN KLEIN products through a variety of media, including print, television, radio, direct mail and the Internet. They first launched their website, at “www.calvinklein.com”, in 1997. The Calvin Klein products are also sold in retail stores across China, where the Respondent resides. The Complainants also operate a Chinese website targeting the Chinese market at “www.calvinklein.cn”. The Complainant, Calvin Klein Trademark Trust, owns numerous trade mark registrations for CALVIN KLEIN marks in various jurisdictions, including the following: Jurisdiction Mark Registration No. Registration Date United States CALVIN KLEIN (stylised) 1,633,261 January 29, 1991 United States CALVIN KLEIN 1,086,041 February 21, 1978 China CALVIN KLEIN 11086670 March 21, 2014 China CK CALVIN KLEIN 6832583 August 14, 2010 The Complainant, Calvin Klein, Inc., also owns the following domain name registrations which the Complainant use to connect to their various websites: - - - - - The disputed domain name The Complainants claim that as a result of their long-standing use, extensive promotion, advertising and publicity, the CALVIN KLEIN trade mark is well known in the United States and throughout the world. The Complainants contend that the disputed domain names are misspellings and thus confusingly similar to their CALVIN KLEIN trade marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith. The Complainants request for the transfer of the disputed domain names. B. Respondent The Respondent clams that the disputed domain names are not similar to the Complainants’ trade marks and will not be confused by consumers; and that the Complainants do not enjoy trade mark rights over CALVIN KLEIN in China since no such registration details have been furnished in the Complaint. The Respondent also claims that he has legally registered the disputed domain names with an intention to use them for certain commercial ventures, and so has a legitimate interest in the same. The Respondent contends that the Complainants’ trade mark CALVIN KELIN is not well known and he is unaware of the same and so could not have registered the disputed domain names in bad faith. The Respondent further contends that the Complainants are engaging in reverse domain name hijacking. 6. Discussion and Findings 6.1 Procedural Issues A. Consolidation of Multiple Complainants The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group. The Complainant, Calvin Klein Trademark Trust, is the registered owner of the CALVIN KLEIN trade marks on which this Complaint is based, while the Complainant, Calvin Klein, Inc., is the beneficial owner of these trade marks. The Panel finds that the Complainants have a common grievance against the person named as the disputed domain name registrant and that it is equitable and procedurally efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to collectively as “the Complainant” below except as otherwise indicated. See section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). B. Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Paragraphs 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases. The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and later provided a Chinese translation of the amended Complaints but it has also requested that English be the language of the proceeding. The Respondent did not respond on the issue of the language of the proceeding but filed his Response in Chinese. Although the Respondent appears to be a native Chinese individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that: (a) the disputed domain names are registered in Latin characters, rather than Chinese script; (b) according to the evidence submitted by the Complainant, the websites to which the disputed domain names resolve all contain contents and links in English. Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting documents as filed in English, as well as the amended Complaints filed in English and Chinese; (ii) it shall accept the Response as filed in Chinese; and (ii) English shall be the language of the proceeding and the decision will be rendered in English. C. Supplemental Filing Paragraph 12 of the Rules allows a panel in its discretion to request further statements or documents from either party, and although the Rules do not expressly provide for unsolicited submissions, under paragraph 10(a) of the Rules, the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the Parties are treated fairly and the proceeding is conducted expeditiously. This is the consensus view of previous UDRP panels. A supplemental filing has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not. See WIPO Overview 3.0, section 4.6 as well as Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC and Sheraton International IP, LLC v. Lin Qing Feng (林清枫); YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service),WIPO Case No. D2015-0942. On June 1, 2020, the Complainant made a supplemental filing to rebut the Respondent’s various claims set out in his Response of May 30, 2020. In particular, the Complainant provided further information on its trade mark registrations in China, as a direct rebuttal to the Respondent’s claim that the Complainant does not enjoy trade mark rights over CALVIN KLEIN in China since no such registration details have been furnished in the Complaint. On June 4, 2020, the Center acknowledged receipt of the Complainant’s supplemental filing and requested the Respondent to confirm whether his Response of May 30, 2020 might be regarded as his complete Response. The Respondent did not send any further communications to the Center. Given that the Complainant’s assertions are relevant and directly in response to the Respondent’s claims, and the Respondent has the opportunity to comment on the Complainant’s supplemental filing but has chosen not to, the Panel accepts this supplemental filing. In any event, if the Panel had not accepted the supplemental filing, this would not have altered the outcome of this case. 6.2 Substantive Issues Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. On the basis of the arguments and evidence introduced by the Complainant and Respondent, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in CALVIN KLEIN by virtue of its use and registration of the same as a trade mark. Each of the disputed domain names is an intentional typographical variant of the Complainant’s trade mark CALVIN KLEIN and the Complainant’s domain name registration Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark. Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974. The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the CALVIN KLEIN trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “李厚昌 (lihouchang)”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain names or has acquired any trade mark rights in the term “Calvin Klein” or similar. According to the evidence submitted by the Complainant, each of the disputed domain names resolves to a parking webpage featuring a collection of click-through links which redirect to third party websites, some of which are associated with the Complainant. Presumably, the Respondent receives pay-per-click fees from the linked websites. The consensus view of previous UDRP panels is that use of a domain name to post pay-per-click links may be permissible in some circumstances, but would not of itself automatically confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. In this case, the Panel finds such use of the disputed domain names does not confer any rights or legitimate interests on the Respondent. The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to come forward with evidence of his rights or legitimate interests in the disputed domain names. In this regard, the Respondent claims that he intends to use the disputed domain names for certain commercial ventures, but did not provide any details of the said ventures. The Respondent also did not provide any credible explanation for his choice of the disputed domain names for his supposed ventures. Since no evidence has been provided to support a right or legitimate interest in the disputed domain names by the Respondent, the prima facie case has not been rebutted. Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. It follows therefore that the Respondent’s claim of reverse domain name hijacking by the Complainant is without basis. Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. By virtue of its extensive use and advertising since 1968, the Complainant and its trade mark CALVIN KLEIN enjoy a significant reputation worldwide and a strong online presence. Considering the nature of the disputed domain names, there is no doubt that the Respondent was aware of the Complainant and its trade mark when he registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the CALVIN KLEIN trade mark and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. According to the evidence submitted by the Complainant, each of the eight disputed domain name resolves to a website which appears to be a parking page featuring a collection of click-through links (such as “Calvin Klein”, “Calvin Klein Obsession”, “Calvin Klein Underwear”, “Klein Boxers”, “Calvin Klein Clothing”) which divert Internet users to third party websites. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. See WIPO Overview 3.0, section 3.5. A presumption may be made that the Respondent stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such use of the disputed domain names clearly seeks to capitalise on the trade mark value of the Complainant’s CALVIN KLEIN trade mark resulting in misleading diversion. In registering the disputed domain names that are typographical variants of the Complainant’s trade marks and domain names, and using them to offer sponsored links or redirect Internet users to websites offering competitive goods and services, the Respondent deprives the Complainant of the opportunity to sell its goods and services to prospective clients who are clearly looking for the Complainant and, at the same time, promotes goods and services offered by competitors. The Respondent is clearly engaging in bad faith. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent is using the disputed domain names for mala fide purposes and for commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith. Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking Considering the Panel’s findings above, the Panel finds that the Complaint was not brought in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names Sok Ling MOI
Sole Panelist
Date: July 25, 2020
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